Friday, July 06, 2012

You might say that this appeal was no picnic for Applicant. The Board affirmed a Section 2(d) refusal of the mark AMERICA'S FAVORITE for mustard, finding it likely to cause confusion with the identical mark registered for ketchup. Applicant conceded that the goods are "somewhat related," but the Board found them to be not only related, but complementary. In fact, both Applicant (French's) and Registrant (Heinz) sell mustard and ketchup under their own brand names. Would You Have Appealed? In re Reckitt Benckiser LLC, Serial No. 85082505 (June 21, 2012) [not precedential].

Examining Attorney Katy Halmen provided Internet evidence and third-party registrations establishing that "mustard, ketchup and sauces are commonly offered by a single entity under a single mark." Moreover, when goods have complementary uses, and are often used together or purchased for the same or related purposes, "such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks." (Examples: bread and cheese; fresh produce and biscuits, cookies, wafers and candy [Huh? - ed.]; bread and frozen chicken parts [Really? - ed.]; sausage and cheese).

Applicant argued that AMERICA'S FAVORITE is a weak mark in light of various third-party registrations, but the Board noted two problems with that assertion: first, there was no evidence regarding the nature or extent of use of the third-party marks; and second, even weak marks are entitled to protection against likely confusion.

Finally, Applicant pointed to its prior registration, now cancelled, for the subject mark, which registration co-existed on the register with the cited registration for a half-dozen years. There were three problems with that argument: first, cancelled registrations have no evidentiary value in this context; second, there is no evidence that Heinz was aware of this registration or believed that there was any likelihood of confusion; and third, the Board is not bound by the prior decisions of examining attorneys in approving a particular mark for publication.

Balancing the du Pont factors, the Board found confusion likely and it affirmed the refusal.